Has someone already come up with your invention or something similar? This is why we do an extensive and complete patent search before ever submitting your invention to be patented.
A patentability search will save you many hours and dollars trying to patent an idea that potentially has been created by another person. A patentability search examines already published patents that relate to your invention in order to ascertain whether your idea has already been patented. Another helpful aspect of a search is that we can see similar inventions, allowing the creator to improve and refine his or her invention without infringing on someone else’s patent. Conducting a patent search is one of the very first steps we take in order to save you time, effort, and money.
Can You Do Your Own Patent Search?
While internet patent searching is a valuable tool, and something you can do on your it, it may be limited by your experience or by the content of some databases. This is why we advise that you work with a professional patent attorney that is experienced with patent searches. This can be just one more way to save yourself some time and effort.
Patent Search Options
It’s unknown to most people that there are actually different types of patent searches. There are four varieties of searches available:
1) Novelty (patentability);
2) Freedom to Operate (FTO);
3) Non-infringement; and
Novelty or Patentability Search
Novelty searches are, for the most part, the most common search requested. This search is conducted in order to determine the likelihood of getting a patent through the United States Patent and Trademark Office (USPTO). This search questions whether the invention is patentable through the USPTO, but is limited in that it does not ask if the invention infringes any other patent already in existence. This search is most commonly used by startups or those with new inventions who request the search in order to determine if their invention is patentable and worth the time and money to pursue. Additionally, the search often yields information that could be valuable to the investors in terms of if there are already other competitors in the same space.
Steps of a Novelty Search
The first step of the novelty search involves clearly identifying the invention and listing out all the elements and key aspects that they believe are “novel”. An invention is considered “novel” when it is unique and different from all previous inventions (called “prior art”) in one or more of its elements.
Once this is determined, a comprehensive search is conducted through the USPTO database for patents and publications. Additional searches through Google, etc., are also conducted in order to determine if any of the prior art discovered during the searches discloses the same elements in either one patent, or even in a combination of prior art, if the combination as disclosed would render the invention obvious.
An invention must be “nonobvious” in addition to “novel”. An invention is considered nonobvious if someone skilled in the particular field of the invention would view the invention as an unexpected or surprising development.
Freedom to Operate Search (FTO)
A Freedom to Operate (FTO) search, sometimes called a Clearance search, determines whether it would be reasonable and economical to commercialize the invention in view of already existing and patented products. These already existing products are often called “in-force patents”. In other words, the FTO search determines if the inventor is free to operate and commercialize the invention without any potential of being sued for infringement. The focus of a FTO search is on the claim portion of any in-force patents rather than the disclosure portion of the prior art as is conducted in a novelty search. FTO searches tend to be much more complicated, time intensive, and thus significantly more expensive. Essentially, it’s a deeper dive into whether or not the invention could infringe upon an in-force patent, rather than just searching to see if a similar product exists.
Steps of a FTO Search
Just as is done with a novelty search, the FTO search involves clearly identifying the invention and listing out all the elements and key aspects that they believe are “novel”. The person conducting the search will focus only on in-force patents and published patent applications in the relevant jurisdiction. A patent attorney will review and analyze the search results, specifically by scrutinizing any independent claims of the relevant patents, and then conducting further research of the prosecution history of those patents. A patent attorney can then assess if there is literal infringement or infringement under the Doctrine of Equivalents.
The goal of an FTO search is to determine that the inventor’s proposed invention does not infringe upon any of the patents found during the FTO search. If its deemed that the invention does infringe on any existing patents, the inventor can decide to either abandon the commercialization of the proposed invention, engage in a redesign, or approach the patent holder for any potential licensing negotiations.
Similar to a FTO search, a non-infringement opinion will determine if the inventor’s proposed invention infringes upon a particular patent. Non-infringement opinions are directed to a specific patent or patents that have been previously identified during a search. For example, a non-infringement opinion would be obtained when a new product, process, or technology is created but is already known to be similar to an existing patented product/process/technology. A non-infringement opinion is particularly helpful in the instance when the inventor has created a product with known competitors with patents.
Steps of a FTO Search
The steps involved for a non-infringement opinion is similar to the FTO search, the difference being that no search is necessary because any previously existing in-force patent has already been identified. Just as with the FTO opinion, any independent claims of the in-force patents must be deconstructed and analyzed and then compared element by element to the proposed new invention.
In the event that an inventor is sued for patent infringement, any previously conducted FTO or non-infringement opinions (preferably written) performed by a reputable licensed patent attorney could be considered in court and may negate findings of infringement.
A few scenarios require validity searches. This type of search is primarily requested by potential defendants that are already involved in a patent infringement lawsuit that wish to invalidate the patentee’s patent as a defense to patent infringement allegations. The goal of this search is to determine whether the identified patent is valid or enforceable.
A validity search and opinion can also be used prior to buying or licensing certain patents as a way to determine the strength of those existing patents. For example, if it turns out the particular patent at issue is or can be invalidated, then the need to purchase or license the patent can be avoided.
Validity opinions can also be used as due diligence prior to mergers or acquisitions for purposes of valuating an IP portfolio of a target company.
Why a Patent Search is Necessary
When conducted, a patent search can prevent any expenditure of money on patent applications for inventions that are already in existence and save the inventor time but not patenting something that is not patentable. A search can also improve the quality of any patent application created for the invention to be submitted.
Having prepared, filed, and prosecuted patent applications (domestic and foreign), our firm is highly respected for its knowledge and patent prosecution.
Our attorneys have experience in all areas of design patents, including:
- Patent Applications
- Patent Search
- Intellectual Property Patents
- Computer Patents
- Gaming Devices
- Mechanical Device Patents
- Medical Device Patents
- Patent Portfolio Management
- Patent Office Actions
- International Patents
Reilly Intellectual Property Law Firm
Reilly Intellectual Property Law Firm provides patent services to protect the inventions that change and shape our world. We handle handles patents, trademarks, copyrights and licensing legal services in Denver. Our experienced attorneys provide strategic guidance, patent counseling and prosecution, new product clearance and licensing, as well as counsel regarding patent enforcement and how to avoid possible infringement issues.
We provide solutions that anticipate our client’s need to protect their intellectual property so that their business thrives. We would love to work with you to develop a dynamic strategy that addresses your patent, trademark, copyright, and licensing concerns.